An international registration designating New Zealand is, subject to these regulations, entitled to become protected if, had the particulars of the international registration been contained in an application for registration of a trade mark under the Act, that application would have satisfied the requirements of the Act and the Trade Marks Regulations for registration of a trade mark.

In subclause (1), the particulars of the international registration means—

The requirement in regulation 44(j) of the Trade Marks Regulations is met by the declaration made by the holder of the international registration when designating New Zealand.

The holder of a protected international trade mark (New Zealand) has, subject to these regulations, the same rights and remedies conferred on an owner of a registered trade mark by the Act and the Trade Marks Regulations.

For the purpose of applying section 10 of the Act, the rights conferred on the holder of the protected trade mark take effect on and from the date that the protected trade mark must be treated as being registered under regulation 20(2).

For the purpose of applying sections 5 and 51(a) of the Act, the actual date of registration is the date that the protected trade mark becomes protected.

For the purpose of applying sections 89 to 98 of the Act, references to goods or services in respect of which a trade mark is registered must be treated as references to goods or services in respect of which a protected international trade mark (New Zealand) confers protection in New Zealand.

This regulation applies if a holder of an international registration designating New Zealand, by notice in writing to the Commissioner,—

The Commissioner must, on receiving the notice, enter the disclaimer or limitation on the register.

At the request of a holder of a protected international trade mark (New Zealand), the Commissioner may—

Section 36 of the Act entitles the holder of an international registration designating New Zealand to the registration of his or her trade mark in priority to other applicants.

The manner of claiming the priority conferred under section 36 of the Act must be determined in accordance with the Madrid Protocol and the Madrid Protocol Regulations.

The date on which the holder is entitled to priority is—

On receiving from the International Bureau an international registration designating New Zealand, the Commissioner must examine whether the international registration satisfies the requirements of regulation 7.

If the trade mark that is the subject of the international registration contains or consists of a language other than English or Māori, or a word or words in characters other than Roman,—

If the Commissioner considers that the requirements of regulation 7 are not met, or are met only in relation to some of the goods or services in respect of which protection in New Zealand has been requested, the Commissioner must—

An extension of time to respond—

A holder must file with the Commissioner an address for service when making a response or when requesting an extension of time.

If the Commissioner is satisfied that the requirements of regulation 7 are met in relation to some or all of the goods or services specified in the international registration, the Commissioner must publish the particulars of the international registration designating New Zealand in the Journal.

This regulation applies instead of regulation 75 of the Trade Marks Regulations and regulation 76 of those regulations does not apply to a notice of opposition filed under this regulation.

A person who opposes the conferral of protection on an international registration designating New Zealand may file with the Commissioner a notice of opposition within 3 months after the date of publication.

The Commissioner may, if requested, extend the deadline for filing a notice of opposition—

The Commissioner must not extend the deadline if the request for extension is received after the deadline has expired.

If a notice of opposition is filed, the Commissioner must—

This regulation applies instead of regulation 79 of the Trade Marks Regulations.

In this regulation, date of refusal means the date on which the Commissioner gives notification of refusal (based on an opposition) to the International Bureau under regulation 16(5).

A holder of an international registration to whom the International Bureau has sent a notice of opposition must file with the Commissioner a counter-statement within 2 months after the date of refusal.

To avoid doubt, if the holder fails to comply with subclause (3) in relation to any class of goods or services in respect of which protection is opposed,—

Except where refusal is based on an opposition, a notification of refusal must not be given after the expiry of 18 months after the date of request.

If there is any likelihood that notice of opposition may be filed after the expiry of the period of 18 months, the Commissioner must inform the International Bureau accordingly.

A notification of refusal must set out the matters required by Article 5 of the Madrid Protocol and rule 17 of the Madrid Protocol Regulations.

The Commissioner must notify the International Bureau after any final decision is made if—

For the purpose of this regulation, a final decision is made if—

The protections set out in regulation 20 apply to a trade mark that is the subject of an international registration designating New Zealand if—

As soon as possible after the time when the protections set out in regulation 20 first apply to an international registration designating New Zealand, the Commissioner must notify the International Bureau that the international registration designating New Zealand is granted protection in New Zealand.

In this regulation, goods or services means goods or services in respect of which protection in New Zealand has been requested.

The protections set out in regulation 20 extend to a protected international trade mark (New Zealand), as corrected, if—

As soon as possible after the time when the protections set out in regulation 20 first extend to a protected international trade mark (New Zealand), as corrected, the Commissioner must notify the International Bureau that the protection has been extended.

In this regulation,—

The protections referred to in regulations 19 and 19A are that—

A trade mark that is protected must be treated as being registered under the Act on and from—

A protected trade mark that is corrected must be treated as being registered, as corrected, under the Act—

Subclause (2) is subject to regulation 30.

Regulations 20B to 20G apply, and regulations 49 to 53 and 131A to 131C of the Trade Marks Regulations do not apply, in relation to the division of an international registration designating New Zealand or a protected international trade mark (New Zealand).

A holder of an international registration designating New Zealand may apply to the Commissioner for division from the registration of—

A holder of a protected international trade mark (New Zealand) may apply to the Commissioner for division from the trade mark of—

An application for division must—

If the Commissioner is satisfied that an application for division is made in accordance with regulations 20B to 20D (as relevant), the Commissioner must present the application to the International Bureau.

If the International Bureau gives notice that the division of an international registration designating New Zealand has been recorded,—

If the International Bureau gives notice that the division of a protected international trade mark (New Zealand) has been recorded,—

A holder of 2 or more international registrations designating New Zealand may apply to the Commissioner for the merger of 2 or more of those registrations.

A holder of 2 or more protected international trade marks (New Zealand) may apply to the Commissioner for the merger of 2 or more of those trade marks.

An application for a merger must—

If the Commissioner is satisfied that an application is made in accordance with regulations 20H and 20I, the Commissioner must present the application to the International Bureau.

If the International Bureau gives notice that the merger has been recorded, the Commissioner must reflect the merger in the register.

This regulation applies if the Commissioner receives from the International Bureau a notification of a correction to either of the following:

The Commissioner may examine whether the international registration, as corrected, continues to satisfy the requirements of regulation 7.

Regulation 13(2) applies, with any necessary modifications, in relation to the international registration, as corrected.

This regulation applies if the Commissioner considers that, in relation to an international registration, as corrected, the requirements of regulation 7 are no longer met.

The Commissioner must—

Regulation 14(2) and (3) applies in relation to the holder’s response.

If the Commissioner is satisfied that the requirements of regulation 7 are met in relation to some or all of the goods or services specified in the international registration, as corrected, the Commissioner must publish the particulars of the international registration, as corrected, in the Journal.

A person who opposes a correction to a protected international trade mark (New Zealand) may file with the Commissioner a notice of opposition within 3 months after publication in the Journal under regulation 20M.

Regulations 16(3) to (5) and 17 (which relate to extending the 3-month deadline and filing a counter-statement) apply in relation to the notice of opposition.

Except where refusal is based on an opposition, a notification of refusal of a correction must not be given after the expiry of 18 months after the date of notification.

If there is any likelihood that a notice of opposition may be filed after the expiry of 18 months, the Commissioner must inform the International Bureau accordingly.

A notification of refusal must set out the matters required by Article 5 of the Madrid Protocol and rule 17 of the Madrid Protocol Regulations.

The Commissioner must notify the International Bureau after any final decision is made if—

In this regulation,—

The Commissioner must notify the International Bureau if a protected international trade mark (New Zealand) is cancelled, altered, or rectified to any extent.

For the purposes of applying sections 65 to 68 and 73 and 74 of the Act,—

The Commissioner must notify the International Bureau if the protection of a protected international trade mark (New Zealand) is, to any extent, cancelled, revoked, declared invalid, altered, or rectified.

If the protection is revoked to any extent, the rights of the holder are deemed to have ceased to exist to that extent—

If the protection is declared invalid to any extent, the trade mark is deemed never to have been a protected international trade mark (New Zealand) to that extent.

Subclause (3) does not affect any transactions past and closed on the date that the declaration of invalidity is recorded in the International Register.

For the purpose of applying subpart 3 of Part 4 of the Act, references to a registered trade mark must be treated as references to a protected international trade mark (New Zealand).

For the purpose of applying sections 120 to 124 of the Act,—

For the purpose of applying sections 186(1) and (2) of the Act,—

In this Part, unless the context otherwise requires,—

This regulation applies when an international registration designating New Zealand is cancelled at the request of the Office of origin under Article 6(4) of the Madrid Protocol in respect of all or some of the goods or services listed in the registration.

The holder may make an application to the Commissioner for registration in New Zealand of the same trade mark in respect of the goods or services listed in the international registration.

The application must be made within 3 months after the date on which the international registration was cancelled and must include the following information:

In this regulation, holder means the person who was the holder of the international registration immediately before its cancellation.

A trade mark registered pursuant to a transformation application must be treated as if it were registered—

If a protected international trade mark (New Zealand) became protected on or before the transformation date, the trade mark must be registered under the Act.

If an international registration designating New Zealand has not become protected by the transformation date and its particulars have been published under regulation 15,—

If the particulars of the international registration designating New Zealand have not been published under regulation 15 by the transformation date and the Commissioner has given a notification of refusal under regulation 14(1), the Commissioner must for the purposes of the transformation application treat the notification of refusal as a notice issued by the Commissioner to the applicant under section 41 of the Act.

This regulation applies if—

The protected trade mark or international registration must, despite regulation 20(2), be treated as being registered under the Act as of the date of registration of the registered trade mark in relation to,—

For the purposes of determining whether the protected trade mark or international registration has priority, it must be treated as having the date of application of the registered trade mark (taking account, where appropriate, of the priorities claimed in respect of the registered trade mark) in relation to,—

Where the conditions specified in subclause (1) are satisfied in relation to a trade mark, subclauses (2) and (3) must—

The Commissioner must,—

An application under subclause (5) must include the following information:

The provisions of this regulation are without prejudice to any right or remedy conferred on any person in respect of the registered trade mark.

This Part makes provision for applications for international registration of trade marks that are to be filed with the International Bureau through the intermediary of the Commissioner.

A person who is an owner of a registered trade mark or an applicant for registration of a trade mark may apply for international registration of the trade mark.

The person must—

Two or more persons may jointly apply for international registration of a trade mark as allowed by rule 8 of the Madrid Protocol Regulations.

An application for international registration must—

For the purpose of subclause (1)(b), the application must be submitted to the Commissioner by using the application facility that may be accessed through the Commissioner’s website or web services.

The Commissioner must perform the functions, under the Madrid Protocol, of the Office of origin in relation to—

The Commissioner must—

If the application results in an international registration, the Commissioner must notify the International Bureau if the basic application or the basic registration is withdrawn, limited, cancelled, abandoned, removed, rejected, or expires or otherwise ceases to have effect in respect of some or all of the goods or services listed in the international registration,—

The Commissioner must take all reasonable steps to ensure that the application is received by the International Bureau within 2 months after the date on which it is filed.

After submitting an application for international registration, the Commissioner must request that the International Bureau cancel the international registration as regards those goods or services covered by the international application in respect of which the basic application or basic registration has ceased to have effect because of an event listed in regulation 34(3).

In all legal proceedings relating to a protected trade mark, the registration of a person as the holder of the protected trade mark is prima facie evidence of the validity of the original international registration and of any subsequent assignment or other transmission of it.

Judicial notice must be taken of the following:

Any document mentioned in subclause (2)(b) or (c) must be admissible as evidence of any instrument or other act of the International Bureau thereby communicated.

Evidence of any instrument issued by the International Bureau or any entry in or extract from that instrument may be given in any legal proceedings by production of a copy, and any document purporting to be such a copy must be received in evidence.

In this regulation, legal proceedings includes proceedings before the Commissioner.

Any act required or authorised by these regulations to be done by or to a person in connection with a request for protection of an international registration as a protected international trade mark (New Zealand), or any procedure relating to a protected international trade mark (New Zealand), may be done by or to an agent authorised by that person in accordance with regulation 22 of the Trade Marks Regulations.

Despite any enactment or rule of law, the Commissioner may communicate to the International Bureau any information that New Zealand is required to communicate by virtue of these regulations or pursuant to the Madrid Protocol or the Madrid Protocol Regulations.